Lopez v. Gap, Inc.

TRADEMARK; UNFAIR COMPETITION (Trademark infringement was not found when marks are not sufficiently distinctive and use primarily geographic terms.)

Opinion (Engelmayer): Daniel G. Lopez (“Lopez”) has been making t-shirts bearing the designation “Lower East Side” or “LES” in three specific design variations since 1999. He has sold them on the street, over the phone, and through the internet. In 2009, Old Navy came out with two t-shirt designs that prompted Lopez to file several pro se claims, most of which were dismissed. Old Navy filed a motion to dismiss the remaining federal unfair competition claim as well as the common law trademark and unfair competition claim under New York law. The court considered these under the Lantham Act, which requires inherent distinctiveness and use in commerce. It found that geographic terms are not inherently distinctive, without a secondary meaning or stylization. Even though Lopez’s product was a result of design efforts, the use of letters in an acronym is common throughout the apparel industry. Lopez did not advertise and most of his transactions were in cash and thus unverifiable. In addition, there was only one sale that he made to an out of state customer, which the court did not find constituted interstate commerce, another consideration in the “use in commerce factor.” There was also no likelihood of confusion because the mark was based on geographic factors, and was not the same as the Old Navy design. Since Lopez sells his products in lower Manhattan and Old Navy has a national market, there was no issue with the proximity of the products. In sum, there was no likelihood that the typical purchaser would be misled by the mark. Accordingly, the court GRANTED Old Navy’s motion to dismiss.